When are amendments entered in a reexamination proceeding?
Amendments in a reexamination proceeding are generally entered if they comply with certain conditions. According to MPEP 2270: “Amendments submitted with a request filed under 35 U.S.C. 302, or after reexamination is ordered under 35 U.S.C. 304 or under 35 U.S.C. 257, and which comply with 37 CFR 1.530(d) – (j), will generally be entered…
Read MoreCan amendments be made after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?
Can amendments be made after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)? Yes, limited amendments can be made after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) is issued. The MPEP provides specific guidance on this: “In some instances, even after a NIRC has been issued, amendments affecting…
Read MoreWhat are the requirements for amendments after a final action in reexamination?
Amendments after a final action in reexamination proceedings are subject to strict requirements. According to MPEP 2260, the examiner’s first action should caution the patent owner that: “The requirements of 37 CFR 1.116(b) will be strictly enforced after final action and that any amendment after a final action must include ‘a showing of good and…
Read MoreWhat are the restrictions on amending the specification during ex parte reexamination?
What are the restrictions on amending the specification during ex parte reexamination? During ex parte reexamination, amendments to the specification are subject to specific restrictions. According to MPEP 2250: No new matter may be introduced into the specification. Amendments must be made by adding, deleting, or replacing a paragraph, by replacing a section, or by…
Read MoreWhat alternatives are available for challenging patents after the discontinuation of inter partes reexamination?
While MPEP 2617 states that “No requests for inter partes reexamination may be filed on or after September 16, 2012,” there are alternative procedures for challenging patents. These include inter partes review (IPR), post-grant review (PGR), and ex parte reexamination. Each of these procedures has its own requirements and timelines, and they were introduced as…
Read MoreWhat papers are allowed to be filed after a request for ex parte reexamination but before the decision on the request?
After filing a request for ex parte reexamination under 35 U.S.C. 302, only specific types of papers are allowed to be filed before the decision on the request. According to MPEP 2225, these include: Citations of patents or printed publications under 37 CFR 1.501 or 37 CFR 1.555 Another complete request under 37 CFR 1.510…
Read MoreWhat happens if all patent claims are canceled in an Ex Parte Reexamination?
If all patent claims are canceled as a result of an ex parte reexamination, it has significant consequences for the patent and any related proceedings. According to MPEP 2288: “If an ex parte reexamination certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be…
Read MoreWhat happens if all claims are disclaimed in a patent under reexamination?
When all claims in a patent under reexamination are disclaimed, a special type of reexamination certificate is issued to reflect this fact. According to MPEP 2287: “If all of the claims are disclaimed in a patent under reexamination, a certificate under 37 CFR 1.570 will be issued indicating that fact.” This means that even if…
Read MoreCan admissions be used as a basis for establishing a substantial new question of patentability in ex parte reexamination?
Admissions, per se, cannot be the sole basis for establishing a substantial new question of patentability in ex parte reexamination. However, admissions can be used in combination with prior art patents or printed publications. The MPEP states: “An admission, per se, may not be the basis for establishing a substantial new question of patentability. However,…
Read MoreHow should I address correspondence for ex parte reexamination requests?
For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions: For mail sent via U.S. Postal Service: Mail Stop “Ex Parte Reexam” Attn: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 For hand-carried or delivery service submissions: Customer Service Window Randolph Building…
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